DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 5, 6, and 8-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Appleton US2002/0023782.
Regarding claim 1, Appleton teaches a torque reduction assembly 30 (Figure 2) for a drill string ¶0005, the torque reduction assembly comprising:
a mandrel 32 for connecting two sections of drill pipe (above and below mandrel 32), the mandrel comprising a first annular shoulder 36 and a plurality of radial retention slots 52 (3 are shown) arranged circumferentially around an outer surface of the mandrel (as shown in Figure 4), including a first retention slot (one of the slots shown in Figure 4) and a second retention slot (another of the slots shown in Figure 4);
an outer sleeve 38 for rotatably mounting on the mandrel (wherein sleeve 38 is able to rotate relative to the mandrel. This is described as “non-rotating” subs in ¶0025 where the sleeve is not rotated with the mandrel, thus providing relative rotation to the mandrel);
a retaining ring 41 (it is noted that Figure 2 has reference number “42” indicating the ring, this believed to be a type-o since 42 are recited as slots in ¶26), for retaining the outer sleeve between the retaining ring and the first annular shoulder (as shown in Figure 2), the retaining ring comprising a first aperture (one of 44) and a circumferential groove 42 about an inner surface of the retaining ring (inside of ring), the first aperture aligned with the circumferential groove (shown in Figure 4), the retaining ring being rotatable about the mandrel so as to progressively align the first aperture with each retention slot (as shown in Figure 4);
a first retention element (one of 40) for locating in the first retention slot via the first aperture (via insertion including 44) to axially fix (via engagement of 42) the retaining ring relative to the mandrel such that the retaining ring is still rotatable about the mandrel (the rotated until dogs engage the closed end of slot 42 description in ¶0026, thus providing at least some ability for retaining ring about the mandrel); and
a second retention element (another of 40) for locating in the second retention slot (another of 52) via the first aperture (aperture 44 gives operators access to 40 ¶0026) to rotationally fix the retaining ring relative to the mandrel.
Regarding claim 5, the first retention element is the same length as the second retention element (elements 40 are shown identical to each other in Figure 4, thus are the same length).
Regarding claim 6, the first retention element is identical to the second retention element (elements 40 are shown identical to each other in Figure 4).
Regarding claim 8, the plurality of radial retention slots further comprises a plurality of first retention slots (such as the upper two slots shown in Figure 4); and the torque reduction assembly further comprises a plurality of first retention elements (the two upper 40 shown in Figure 4), each first retention element for locating in a respective first retention slot (as shown in Figure 4) via the first aperture (wherein the aperture such as 44 enable operator access to 42 as described above) to axially fix the retaining ring relative to the mandrel such that the retaining ring is still rotatable about the mandrel (as described above).
Regarding claim 9, the plurality of radial retention slots further comprises a plurality of second retention slots (select the lower two slots 52 shown in Figure 4);
the retaining ring further comprises a second aperture (another of apertures 44), the second aperture aligned with the circumferential groove (44 leads to respective slot 44), the retaining ring being rotatable about the mandrel so as to align the first aperture and the second aperture with respective second retention slots simultaneously (via rotational movement of 38); and the torque reduction assembly further comprises a plurality of second retention elements (the two lower 40 shown in Figure 4), each second retention element for locating in a respective second retention slot (shown in Figure 4) via the first aperture (wherein aperture 44 enables operator access as described above) and the second aperture to rotationally fix the retaining ring relative to the mandrel (when 40 is engaged with the end surface of 44 extending into 42. Rotation cannot occur in that direction due to 40 engaging with the wall of 44. See Figure A, annotated from Figure 4, below).
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Figure A: annotated Figure 4
Regarding claim 10, the plurality of radial retention slots are arranged with N-fold (3 are shown in Figure 4) rotational symmetry (Figure 4 shows rotationally symmetric disposal), where N is the number of retention slots (3 are shown).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2-4, 7, 11, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Appleton alone.
Regarding claim 2, Appleton teaches the invention substantially as claimed, as described above, but does not teach the first retention element is shorter than the second retention element.
It would have been an obvious matter of design choice to a person having ordinary skill in the art before the effective filing date to select the size of the second retention element to be longer (thus making the first retention element shorter than the second retention element) with a reasonable expectation of success in providing a retention element with a longer wear-resistant body due to the longer/thicker body portion, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Note that those of ordinary skill in the art would appreciate that a modification such as a mere change in size of a component would be obvious. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). See also, MPEP § 2144.04 which states: In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding claim 3, Appleton teaches the first retention slot is the same depth as the second retention slot (Figure 4 shows the slots are the same as each other).
Regarding claim 4, Appleton teaches the first retention slot is identical to the second retention slot (Figure 4 shows the slots are the same as each other).
Regarding claim 7, Appleton teaches the invention substantially as claimed, as described above, but does not teach the first retention slot is deeper than the second retention slot.
It would have been an obvious matter of design choice to a person having ordinary skill in the art before the effective filing date to select the size of the first retention slot to be deeper than the second retention slot with a reasonable expectation of success in providing a retention slot with more room for a longer spring to provide more spring force, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 11, the embodiment of Figures 2-4 of Appleton teaches the invention substantially as claimed, as described above, but does not teach a bearing sleeve for mounting on the mandrel between the mandrel and the outer sleeve.
The embodiment shown in Figure 5 show a bearing sleeve (race tracks 76) for mounting on the mandrel 62 radially between the mandrel 62 and outer sleeve 68. This allows bearings to be held between the mandrel and the sleeve ¶0031.
It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify Appleton’s Figures 2-4 embodiment’s rotational connection between the mandrel and outer sleeve in view of Figure5-6 embodiment’s bearing sleeve with a reasonable expectation of success to enable bearings to be held between the mandrel and the sleeve.
Regarding claim 13, Appleton teaches the invention substantially as claimed, as described above, but does not teach the mandrel comprises an external thread and the bearing sleeve comprises an internal thread for screwing onto the external thread to mount the bearing sleeve on the mandrel.
Figure 5 teaches that it is known in the art to support a sleeve 70 on the mandrel 62 where the mandrel has external threads 72 and the sleeve has internal threads (pairing with threads 72) to enable support of the sleeve on the mandrel.
It would have been obvious to one having ordinary skill in the art at the time of the effective filing date to change the relative position of the bearing sleeve to be held radially adjacent to the mandrel, as a means for providing race 77 that is replaceable, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify the bearing sleeve in view of the threaded connection 72 (as claimed) with a reasonable expectation of success to enable support of a replaceable bearing sleeve onto the mandrel.
Note that it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167. See also, MPEP § 2144.04, which states: In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955) (Prior art disclosed a clock fixed to the stationary steering wheel column of an automobile while the gear for winding the clock moves with steering wheel; mere reversal of such movement, so the clock moves with wheel, was held to be an obvious expedient.).
Response to Arguments
Applicant's arguments filed 9/29/2025 have been fully considered but they are not persuasive. Applicant's arguments that Appleton's retaining ring 41 are not rotatable about the mandrel so as to progressively align the first aperture with each retention slot are not persuasive. As shown in Figure 4, ring 41 can rotate until dogs 40 engage closed end of slot 42 ¶0026, thus allowing progressive alignment for the first aperture 44 with retention slot 52 by rotation. In particular, slots 52 can include the regions to hold 48, and when 41 is rotated such that dogs 40 ride in 42, 44 can be aligned with respective retention slots 52. The term "incrementally" is given it's broadest reasonable definition a to permit alignment by small changes. Therefore, alignment of 52 and 44 can be done in infinite small rotational movements until fully aligned.
Applicant's arguments that Appleton does not teach a first retention element for locating in the first retention slot about the first aperture to axially fix the retaining ring such that the retaining ring is still rotatable about the mandrel" are not persuasive. Retention elements 40 are shown in the slot 42, providing axial fixing, but permit rotational movement about the mandrel in at least one direction. The claim does not include additional limitations to exclude retention element 40 preventing rotation when 40 engages ends of 40 during a particular rotational direction.
Applicant's arguments that Appleton does not teach a second retention element locating in a second retention slot via the first aperture to rotationally fix the retaining ring relative to the mandrel is not persuasive. Since the claim does not specify what type of rotational fixing is required, it is interpreted that at least one of 40 limits rotational movement in the counterclockwise direction (when viewing Figure 4) and engaged in the end of 42, thus provides the "rotationally fix" limitation of the claim. The term "via the first aperture" is given little patentable weight, since no indication is provided how the first aperture is being used. Therefore, aperture 44 providing operators access to 40 is considered to provide the claimed "via" limitation.
Therefore, applicant's arguments regarding dependent claims are similarly refuted.
Allowable Subject Matter
Claims 14-24 are allowed.
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Cathleen Hutchins whose telephone number is (571)270-3651. The examiner can normally be reached M-F 11am-9:30PM EST.
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/CATHLEEN R HUTCHINS/Primary Examiner, Art Unit 3672 11/20/2025